UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88270390
MARK: ILC
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: He Yihao
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: July 11, 2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on May 17, 2019.
In a previous Office action dated April 5, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. The Office action included no requirements.
The trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
• Section 2(d) Refusal – Likelihood of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant applied for the mark ILC with a design for use in connection with Aquarium lights; Bicycle lights; Diving lights; Electric flashlights; Electric lights for Christmas trees; Electric track lighting units; Fairy lights for festive decoration; Fluorescent lighting tubes; Headlights for automobiles; Lamps; LED luminaires; Light bulbs; Lighting apparatus, namely, lighting installations; Lights for vehicles; Motorcycle lights; Outdoor portable lighting products, namely, headlamps; Searchlights; Sockets for electric lights; Street lamps; String lights for festive decoration; Theatrical stage lighting apparatus; Ultraviolet ray lamps, not for medical purposes; LED light assemblies for street lights, signs, commercial lighting, automobiles, buildings, and other architectural uses; Safety lamps for underground use” in International Class 11.
Registration No. 5227064 is for the mark ILC with a design for use with “Aeroplanes; Bicycles; Boats; Cars; Civilian drones; Electrically-powered motor vehicles; Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; Motorcycles; Motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device; Motors and engines for land vehicles; Motors, electric, for land vehicles; Refrigerated vehicles; Remotely controlled land vehicle; Strollers; Electrically-powered motor scooters; Internal combustion engines for land vehicles; Land vehicles, namely, low-speed electric vehicles; Self-propelled electric vehicle; Vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential” in International Class 12.
Registration No. 1975637 is for the mark ILC with stylization for use with “lighting and energy control systems comprising controllers, transformers, switches, sensors, timers, relays, panels and parts thereof” in International Class 9.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks.
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
As noted in the Office action dated April 5, 2019, the applicant’s mark is ILC appearing as the wording “iLC” in stylized format within an incomplete circle, and the mark in Registration No. 5227064 is ILC appearing in the same stylization and design. In short, the registered mark reflects the exact design and lettering as the applied-for mark. While the registrant’s mark includes a claim for the color blue, the applicant’s mark includes no color claim, which means the applicant would be allowed to use the mark in any color, including blue claimed by the registrant. Thus, these marks are virtually identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are virtually identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s goods and those in Registration No. 5227064. Id.
Therefore, the applied-for mark and the mark in Registration No. 5227064 are confusingly similar.
The mark in Registration No. 1975637 also reflects the lettering ILC in a stylized format. Again, the applied-for mark appears in the stylized lettering with the previously noted design element. However, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Further, the design elements of each of these compared marks serves to stress the significance of the underlying lettering. In other words, the elements of the applied-for mark and registration do not detract from the significance of the wording in those marks. Thus, the comparison of these marks falls primarily to their wording.
Again, both marks include the same three letters, “ILC”. This lettering is the same, as is its resulting pronunciation and connotation for both the applicant and the registrant in Registration No. 1975637. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Therefore, the same lettering in both marks, which is the dominant feature of both marks, make the applicant’s mark and the mark in Registration No. 1975637 confusingly similar.
Comparison of the Goods.
The application identifies “Aquarium lights; Bicycle lights; Diving lights; Electric flashlights; Electric lights for Christmas trees; Electric track lighting units; Fairy lights for festive decoration; Fluorescent lighting tubes; Headlights for automobiles; Lamps; LED luminaires; Light bulbs; Lighting apparatus, namely, lighting installations; Lights for vehicles; Motorcycle lights; Outdoor portable lighting products, namely, headlamps; Searchlights; Sockets for electric lights; Street lamps; String lights for festive decoration; Theatrical stage lighting apparatus; Ultraviolet ray lamps, not for medical purposes; LED light assemblies for street lights, signs, commercial lighting, automobiles, buildings, and other architectural uses; Safety lamps for underground use” in International Class 11.
Registration No. 5227064 identifies “Aeroplanes; Bicycles; Boats; Cars; Civilian drones; Electrically-powered motor vehicles; Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; Motorcycles; Motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device; Motors and engines for land vehicles; Motors, electric, for land vehicles; Refrigerated vehicles; Remotely controlled land vehicle; Strollers; Electrically-powered motor scooters; Internal combustion engines for land vehicles; Land vehicles, namely, low-speed electric vehicles; Self-propelled electric vehicle; Vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential” in Class 12. Registration No. 1975637 identifies “lighting and energy control systems comprising controllers, transformers, switches, sensors, timers, relays, panels and parts thereof” in Class 9.
As to Registration No. 5227064, the prior Office action indicated the complementary nature of the goods identified by the applicant and registrant, noting most relevant in regards to the comparison are the applicant’s identified goods of “Bicycle lights . . . Headlights for automobiles . . . Light bulbs . . . Lights for vehicles . . . Motorcycle lights . . . [and] LED light assemblies . . . for automobiles.” The registration’s identification lists the vehicles with which the applicant’s goods are noted to be specifically intended and used, such as bicycles, cars, motorcycles, and automobiles. Notably, sealed beam headlamps became standard on automobiles in the U.S. as of 1940, and the laws of every State require the use of headlights by law.
The prior Office action also provided evidence showing that the same entity commonly provides the relevant goods identified by the registrant with the complementary goods identified by the applicant in the same package and under the same mark. Thus, applicant’s and registrant’s goods in Registration No. 5227064 are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
To be clear, the evidence previously cited, which is incorporated herein by reference, in addition to the evidence provided for support in this current action, indicates that the compared goods are not only complementary but sold through the same trade channels. In short, the attached Internet evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. As examples, sources like papilloncycles.com provides both bicycles and bicycle lights. Attachments 1-4. Other sources provide both motorcycles alongside lights for motorcycles, including LED lighting. Attachments 5-7. Finally, car dealerships provide not only automobiles but allow consumers to purchase parts and accessories, including lights. Attachment 8. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Registration No. 1975637 identifies “lighting and energy control systems comprising controllers, transformers, switches, sensors, timers, relays, panels and parts thereof” in Class 9. As noted in the prior action, the applicant’s identification does not specifically identify the registrant’s goods as corresponding goods per se, but the nature of the applicant’s goods, which generally are forms of light fixtures, assemblies, and bulbs, clearly complement the goods in Registration No. 1975637. Simply, lighting control systems like those identified by the registrant are used to control light emittance from light bulbs, LED lamps, and LED luminaires as identified by the applicant.
Nonetheless, the additional evidence attached to this action also establishes that the compared goods also are sold through the same trade channels. Thus, the attached Internet evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. For instance, sources like 1000bulbs.com provide the parts of the lighting systems identified in the registration alongside LED assemblies and light bulbs like those identified by the applicant. Attachments 9-13. Further, usa.lighting.philips.com provides both lighting controls systems and corresponding light bulbs and markets them under the same mark to installers. Attachments 14-15. Again, the applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Because applicant and registrant’s marks and goods are similar, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. Accordingly, the applicant’s mark creates a likelihood of confusion with a registered mark, and registration is properly refused pursuant to Section 2(d) of the Trademark Act.
Applicant’s Arguments.
First, to the Response dated May 17, 2019, the applicant attaches a “Declaration for Coexistence of Trademark” signed by the registrant in Registration No. 5227064. However, that Declaration does not constitute a consent agreement because it offers no agreement to registration of the applied-for mark. TMEP §1207.01(d)(viii). Even if presenting a properly executed consent to registration, the Declaration would carry little weight in the current evaluation because it would constitute a “naked consent.” A “naked consent” is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion nor (2) describes the arrangements undertaken by the parties to avoid confusing the public. See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii). These consents are generally accorded little weight in a likelihood of confusion determination without additional factors to support confusion is unlikely. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973). Thus, the Declaration offers no basis to overcome the refusal under Section 2(d) of the Trademark Act.
In a similar respect, the applicant’s Response notes, “As for the likelihood of confusion with the registered mark [in Registration No. 5227064], the applicant states that although the trademark applicants are different, the two marks are actually owned by different shareholders of the same company.” As such, the Response offers arguments of “single source” and “unity of control.” In short, a likelihood of confusion must exist as to the source of goods and/or services. Thus, where the owner of a registration differs from the owner of an application between whom a likelihood of confusion has been found, evidence of a legal relationship between those parties and a unity of control over the use of the respective marks may nonetheless indicate the goods and/or services emanate from a “single source” in the eyes of consumers. TMEP §1201.07(a).
The above argument is unpersuasive in this case. First, while the Response refers to a single company of which the respective registrant and applicant are shareholders, that company is listed as the owner of neither the registration nor the application. Further, respective shareholders in a single company may share common interests in that company, but that does not establish a legal relationship between those shareholders in itself. As well, while both the registrant and applicant may own any quantity of shares in the unidentified company, which remains undisclosed, there is no evidence that either individual carries authority to exercise control regarding the assets of that company, much less the other individual in this case or any other shareholder individually. Simply, in the current case, the owner of the registered mark is an individual, as is the owner of the applied-for mark, and no evidence of record establishes that the two individuals constitute a single source, that a legal relationship exists between these entities, or control by either individual over the marks or goods of the other. TMEP §§1201.07(b) et seq. As a single source is not established by the record, this argument is unavailing.
The applicant also proposes that the design elements in the applied-for mark and the mark in Registration No. 1975637 differentiate the marks to such a degree as to avoid a likelihood of confusion. For the reasons recited previously when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight. Even so, the lettering of the compared marks in the current case is identical. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). As such, this argument is unavailing.
The applicant notes next that research of the registrant’s goods in Registration No. 1975637 shows they are not related to the applicant’s for likelihood of confusion purposes. When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
To that end, the applicant continues by indicating that the registrant’s goods are provided for professionals while the applicant’s goods are intended for non-professional consumers, which divides the trade channels of the goods. First, different goods in the electrical, electronic, and/or electromechanical fields have been found to be related where the evidence shows that the goods would be marketed through the same channels of trade and/or sold to the same classes of purchasers. See, e.g., Alliance Mfg. Co. v. ABH Diversified Prods., Inc., 226 USPQ 348 (TTAB 1985) (finding cycling-type furnace controllers and various home products, including garage door openers and remote controls for operating lights and appliances, to be related, where both parties’ goods were electrically powered/electronically operated, had similar energy conserving characteristics, and were sold for residential use); In re Globe-Union Inc., 189 USPQ 158, 159 (TTAB 1975) (finding resistor-capacitor components and ceramic condensers to be related, where such goods “would be sold in the same trade channels to the same classes of purchasers such as original equipment manufacture[r]s for incorporation in the same piece of electronic equipment or apparatus”); In re Dynaco, Inc., 189 USPQ 104, 105 (TTAB 1975) (finding two-channel stereophonic amplifiers, loudspeakers, and non-electronic devices for connecting amplifiers and speakers, on the one hand, and switching transistors, on the other, to be related because the goods would be “invariably sold to the same class of purchasers in such circumstances and conditions that if persons were to encounter them under the same or similar marks, they might well be induced to believe that they originate from a common source”); Nat'l Steel Constr. Co. v. Matsushita Elec. Indus. Co., 158 USPQ 464 (TTAB 1968) (finding electric washing machines and electric water heaters to be related, where such goods were sold through the same channels of trade to the same class of purchaser, where the purchase of one of the party’s goods could lead to the purchase of the other party’s goods, and where the evidence of record indicated that a single manufacturer might produce both electric washing machines and electric water heaters). Second, despite the applicant’s contrary contention, the evidence previously cited indicates that the compared goods travel in the same trade channels. Therefore, this argument is not persuasive.
Further, reliance on professional knowledge in this case is misplaced. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). Relying again on evidence cited in this action, goods such as those identified by the registrant in Registration No. 1975637 are marketed and available to laypersons.
Finally, the applicant contends that there is no likelihood of confusion by consumers because the mark in Registration No. 1975637 carries a different connotation than the applied-for mark despite both being “ILC” with designs. The applicant explains that the applied-for mark is intended as an acronym for “I Love China”. However, that phrase is not part of the applied-for mark, which offers no other bases from which a consumer might understand it as a reference to that phrase. Further, the marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Considering the above factors, the refusal under Section 2(d) of the Trademark Act is made FINAL.
RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Jeffrey Oakes/
Jeffrey Oakes
Trademark Examining Attorney
U.S. Patent and Trademark Office
(571) 272-8653
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
